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United States District Court,S.D. New York.

and costs, and I also deny Defendants'


Dalia GAL, f/k/a Dalia Gal-Ghelber, motion for sanctions.
Plaintiff,
v. I. BACKGROUND
VIACOM INTERNATIONAL, INC., Simon
& Schuster, Inc., The Thomson Corporation, Plaintiff, a professional writer, asserts that
Thomson Gale, Inc., Thorndike Press, she is the author of, and has at all relevant
Simon & Schuster Audio, Inc., a division of times held a valid copyright in, a screenplay
Simon & Schuster, Inc., Pocket Books, Inc., entitled Immortalin (“the Screenplay”). See
a division of Simon & Schuster, Inc., and Amended Complaint ¶¶ 3, 15-18. It is
Mary Higgins Clark, Defendants. Plaintiff's contention that the novel The
No. 05 Civ.0263 (CSH). Second Time Around (“the Novel”), credited
to Mary Higgins Clark and published or
Dec. 5, 2005. otherwise made available by the other
named defendants in 2003, unlawfully
infringes on the Screenplay, which was
MEMORANDUM OPINION AND ORDER completed in the middle of 2000, by
including “themes and scenes that were
HAIGHT, Senior District Judge. substantially similar to and directly copied
This is an action for copyright infringement from the themes and scenes in the
under the Copyright Act of 1976, as [Screenplay].” Id. ¶ 22. Plaintiff cites
amended, 17 U.S.C. § 101, et seq. Plaintiff several alleged examples of “selected,
Dalia Gal (“Gal” or “Plaintiff”) alleges that, illustrative similarities” between the two
through the publication of a novel credited works. Id. ¶ 23.
to Mary Higgins Clark, the above-named
defendants (“Defendants”) infringed Gal's Plaintiff made these allegations and claims
copyright in a screenplay she had authored. in her original complaint, filed January 11,
2005. In that original complaint, however,
Currently, there are two motions pending Plaintiff's counsel mistakenly referenced the
before the court: (1) Defendants' motion to copyright registration number of an older,
dismiss the amended complaint pursuant to substantially different version of the
Federal Rule of Civil Procedure 12(b)(6), Screenplay.FN1See Affidavit of Marcia B.
based on the asserted lack of substantial Paul, counsel for Defendants (“Paul Aff.”),
similarity between the two works (in attached to Motion for Sanctions, ¶ 8. When,
connection with this motion, Defendants ask using the incorrect registration number
to be awarded attorneys' fees and costs); and supplied by Plaintiff, Defendants obtained a
(2) Defendants' motion for sanctions against copy of what they believed was the relevant
Plaintiff's counsel pursuant to Federal Rule version of the Screenplay, Defendants were
of Civil Procedure 11. apparently (and rightfully) surprised to find
that many of the alleged similarities between
For the following reasons, I deny the two works did not exist, because the
Defendants' motion to dismiss, as well as characters, scenes, or events described by
their request for an award of attorneys' fees Plaintiff's counsel in the complaint simply
were not present in Plaintiff's work.
Defendants notified Plaintiff's counsel of Further, based, inter alia, upon the failure of
this fact by letter, and asked counsel to Plaintiff's counsel to correct the error in
withdraw the (what appeared to be identifying the correct version of Gal's work,
frivolous) complaint, based on the absence even when given notice that such was
of any real similarity between the works. necessary, Defendants moved to have the
See id. ¶¶ 4-5. Court impose sanctions against Plaintiff's
counsel, pursuant to Federal Rule of Civil
FN1. In fact, the current, relevant Procedure 11. Defendants ask that Plaintiff's
version of the Screenplay was not counsel be ordered to pay all costs and
copyrighted at the time of the filing attorneys' fees for time spent preparing the
of the original complaint, but was motion to dismiss. See Motion for Sanctions.
apparently properly copyrighted
prior to the filing of the amended II. DISCUSSION
complaint. See Affidavit of Richard
F. Horowitz, counsel for Plaintiff, ¶ A. The Motion to Dismiss Pursuant to Rule
7. 12(b)(6)

Instead of investigating Defendants' claim 1. The Rule 12(b)(6) Standard of Review


that the instances of alleged similarity could
not be found in Gal's work, Plaintiff's The district court should grant a Rule
counsel simply maintained that the 12(b)(6) motion “only if it is clear that no
similarities existed, and asserted that the relief could be granted under any set of facts
claim would be pressed on. See id. ¶ 6. that could be proved consistent with the
Understandably, Defendants then moved to allegations.” Hishon v. King & Spalding,
dismiss the complaint for failure to state a 467 U.S. 69, 73, 104 S.Ct. 2229, 81 L.Ed.2d
claim, since the similarities asserted by 59 (1984) (citing Conley v. Gibson, 355 U.S.
Plaintiff apparently did not exist between the 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80
two works. See id. ¶ 7. It was only after (1957)). On a motion to dismiss, a district
Defendants' motion to dismiss was filed that court must accept a plaintiff's well-pleaded
Plaintiff's counsel undertook an inquiry and factual allegations as true, Papasan v.
discovered that a mistake in identification of Allain, 478 U.S. 265, 283, 106 S.Ct. 2932,
the work had been made. See id. ¶ 8. 92 L.Ed.2d 209 (1986), and such factual
Thereafter, the proper version of the allegations must be “construed favorably to
Screenplay was copyrighted and provided to the plaintiff,” LaBounty v. Adler, 933 F.2d
Defendants, and the complaint was amended 121, 123 (2d Cir.1991) (citations omitted).
accordingly. Defendants then moved to “The review of such a motion is limited, and
dismiss the amended complaint, asserting the issue is not whether a plaintiff will
that, even considering the “correct” version ultimately prevail but whether the claimant
of the Screenplay, Plaintiff was unable as a is entitled to offer evidence to support the
matter of law to show substantial similarity claims. Recovery may appear remote and
between the two works. See Motion to unlikely on the face of the pleading, but that
Dismiss Amended Complaint. is not the test for dismissal.” Bernheim v.
Litt, 79 F.3d 318, 321 (2d Cir.1996) (internal omitted).
citations and quotation marks omitted).
In the case at bar, Plaintiff does not offer
2. Copyright Infringement direct evidence of actual copying. As for
indirect evidence, for the purpose of the
a) Basic Requirements motion to dismiss only Defendants concede
their access to Plaintiff's work. The parties,
[1][2] In order to prevail on an infringement however, do not seem to address the
claim, a plaintiff must prove “ ‘(1) question of whether there are similarities
ownership of a valid copyright, and (2) “probative of copying between the
copying of constituent elements of the work works,”Laureyssens, 964 F.2d at 140,
that are original.’ ” Williams v. Crichton, 84 instead focusing on whether the Screenplay
F.3d 581, 587 (2d Cir.1996) (quoting Feist and the Novel are substantially similar with
Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. regard to protectible material. In such a case,
340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 it seems reasonable for the Court to assume,
(1991)). In the case at bar, Defendants do for the purposes of the motion, that
not challenge Gal's claim to a valid sufficient probative similarity exists to raise
copyright in the Screenplay. See Defendants' the inference of actual copying, and that,
Memorandum in Support of Motion to therefore, the Court's inquiry may focus on
Dismiss at 3. Thus, the Court's focus is on the “substantial similarity” requirement in
the second requirement, that of copying. the context of infringement. See Green v.
Lindsey, 885 F.Supp. 469, 479
[3][4] The copying requirement can be (S.D.N.Y.1992).
broken down into two parts. As an initial
matter, a plaintiff must first show that the b) “Substantial Similarity”
defendant “actually copied” her work. See
Boisson v. Banian, Ltd., 273 F.3d 262, 267 (i) Comparison of the Works
(2d Cir.2001) (citing Streetwise Maps, Inc.
v. VanDam, Inc., 159 F.3d 739, 747 (2d In order to address the substantial similarity
Cir.1998)). Actual copying may be shown issue, the Court has undertaken its own
by either direct or indirect evidence. Id. review of the Novel and the Screenplay, as
(citing Laureyssens v. Idea Group, Inc., 964 the works themselves are the best evidence
F.2d 131, 140 (2d Cir.1992)). “Indirect of the presence or absence of substantial
evidence [of actual copying] may include similarity, see Walker v. Time Life Films, 784
proof of ‘access to the copyrighted work, F.2d 44, 49 (2d Cir.1986) (“Each of the
similarities that are probative of copying panel members has read the book and
between the works, and expert testimony.’ ” reviewed the film.”), and supersede and
Id. (quoting Laureyssens, 964 F.2d at 140). control contrary descriptions of them, see id.
“But not all copying results in copyright at 52 (upholding district judge's decision not
infringement.” Id. at 268. A plaintiff must to view the voice-over version of film
demonstrate “substantial similarity” between submitted by plaintiff).
the defendant's work and the protectible
elements of plaintiff's work. Id. (citations The following is a significantly abridged
description of the Novel and the Screenplay: companies. Then the two CEOs meet to talk
behind closed doors. When Alice later tells
The Screenplay: Bonnie, her friend and the medical
correspondent at the paper, about the
The Screenplay opens at a press conference, meeting between MacGreal and Lawrence,
held at the Grand Hyatt hotel in Manhattan, Bonnie guesses that Lawrence is trying to
where a large drug company announces the acquire the rights to Immortalin, in order to
results of its new “miracle” anti-aging drug, prevent the product from competing with
called Immortalin. Involved in the Grow in the market.
presentation by the company are two
scientist/doctors, David Baron and Fred On a later date, MacGreal informs Baron
Leary, and the CEO of the company, Robert and Leary that he intends to sell the
MacGreal. The main character of the story, Immortalin rights to Lawrence, and he asks
Alice Greene,FN2 is at the conference as a each of the scientists to sign a non-compete
reporter for the New York Report; she is agreement. Baron, who is in the process of
accompanied by her photographer, Mitch developing an improved generation of the
DeCarlo. The drug company's presentation drug, refuses to sign, and is fired. Leary
is interrupted by an irate man, complaining signs the agreement.
that Immortalin trial treatment failed to cure
his brother, and in fact made him worse. Meanwhile, Alice's sick mother is treated
MacGreal asserts that the man's brother did with Grow, and her condition deteriorates.
not, in fact, receive Immortalin, but was Bonnie tells Alice of a rumor regarding a
given a placebo as part of the trial. Also at new generation of Immortalin, which might
the conference, Baron is asked a question be able to help Alice's mother.
about the competing drug Grow, to which he
responds by disparaging the competing drug. Alice goes to the drug company's office to
interview Leary and Baron about
FN2. Alice is an attractive 28-year Immortalin, but Baron does not appear.
old divorcee with a young daughter. Leary denies the existence of a new
generation of the drug. Leary asks Alice out
After the conference, Alice undertakes to for drinks that night, and they have sex at his
investigate the scientists involved in the apartment. The next morning, Alice
Immortalin project. To that end, she attends0 surreptitiously steals Melissa Baron's
a party hosted by MacGreal. At the party, address from Leary's address book before
Alice is introduced to Baron's attractive leaving.
wife, Melissa. Alice later observes Melissa
using cocaine, as well as kissing MacGreal. Apparently later that day, Alice intrudes
At the same party, MacGreal's wife, Gloria, upon a meeting between MacGreal,
has a discussion with Bruce Lawrence, CEO Lawrence, and Leary, demanding to know
of another large drug company (which the whereabouts of the missing Baron. She
produces Grow), wherein Gloria tells mentions that she saw MacGreal and
Lawrence that MacGreal will follow through Baron's wife together at the party. Alice
with a deal between the two drug leaves without gaining any new information.
The next day, she reports this to Bonnie,
Later, Alice visits artist Melissa Baron in her who tells her she should alert the police.
East Village studio, asking after her Meanwhile, Zacharias bugs Alice's home
husband. Meanwhile, outside on the street, phone. Gloria connects with Zacharias after
Abraham Zacharias, who we later learn is a watching him trail Alice; Gloria hires him to
terrorist-for-hire, watches Melissa's get the rumored new generation of
apartment. Melissa is not happy about Immortalin for her, so that she can use it
Alice's visit, and does not appear concerned herself to reverse the flow of years, which
about her missing husband. Melissa does, have not been kind to her appearance.
however, tell Alice that Baron's mentor, a
Dr. Williams, may know his whereabouts. Alice, using her home phone, calls Mitch to
Alice then leaves, and goes to visit ask him to join her in visiting the foreclosed
Williams. After some prompting, Alice earns home where Baron's research is supposedly
Williams' trust, primarily by invoking her ill stashed. Zacharias hears this, and beats Alice
mother, who she hopes could be cured by and Mitch to the house. There, he steals
Baron's most recent version of Immortalin. computer files as well as vials of what
Williams tells Alice that Baron is staying at appears to be the new Immortalin. When
an apartment in Queens, scared into hiding. Alice and Mitch stumble upon Zacharias, he
Alice then goes to visit Baron, and is kills Mitch while Alice manages to escape.
followed by Zacharias, who has been tailing Alice manages to call the police, and they
her. arrive on the scene after Zacharias has fled.

Baron's apartment doubles as a lab. He In the next scene, apparently the following
admits Alice, who asks about the rumored day, Gloria and Lawrence meet for lunch,
new generation of Immortalin, on her and she provides him with one of the vials
mother's behalf. Baron admits that there stolen by Zacharias. Gloria wants
have been attempts made on his life, and Lawrence's labs to test the drug, with a view
also mentions that his research records are to injecting her with the contents.
located in the basement of his old house in
New Jersey, which has been foreclosed At the newspaper, Alice, who had been
upon. investigating the Immortalin story without
authorization, is placed on leave by the
Meanwhile, in MacGreal's mansion, he and paper. She vows, however, to continue her
Gloria, his wife, discuss the consummation investigation. To that end, she visits Baron at
of the deal with Lawrence's drug company. his apartment, where he reveals that the
MacGreal complains about Alice's snooping, research and vials left at the foreclosed
and admits to staging a hit-and-run attempt house were fake-the vials contained only an
on Baron. He also mentions pressure from old derivative of Immortalin.
Nord Biotech, a firm that apparently was
also bidding on the rights to Immortalin. The next day, Alice arrives uninvited at the
MacGreal mansion, where MacGreal and
At night, while Alice is home in her house, Gloria are engaged in a bitter fight about
she notices Zacharias outside watching her. MacGreal's affair with Melissa Baron.
Gloria tells Alice how much money for her to demand payment for supplying the
MacGreal stands to make from selling the stolen drug. When Gloria refuses to pay
rights to Immortalin, in hopes that Alice will him, saying he stole the wrong drug, he kills
publish the numbers so that Gloria will not her.
be cheated if they divorce. Gloria is angered
when Alice informs her she is no longer A day later, Alice and Leary visit Baron and
working for the paper. Williams at Baron's apartment. Leary
reveals that they have learned that Zacharias
Later, while Alice is driving, her brakes fail works for a terrorist organization that runs
and she crashes her car. Zacharias, who has Nord Biotech, which organization is
been following Alice, makes a phone call, attempting to develop powerful germ
stating that Alice has been neutralized. Alice weapons. Zacharias then arrives at the
is hospitalized, but not mortally injured. apartment, demanding the new generation
Leary, who still has romantic feelings for Immortalin. A fight breaks out, and, after a
Alice, visits her in the hospital. He also says violent struggle, Leary kills Zacharias.
that her accident was probably the result of
someone trying to eliminate her, probably Alice breaks the bioterrorism story and is
the same person who killed Mitch. Leary rehired by the paper. Her mother is then
also reveals that Baron was, in fact, working treated with the new Immortalin developed
on a new generation of Immortalin, and that, by Baron, and shows dramatic improvement.
as a result of the drug companies' deal to sell The drug is rushed through the FDA
the rights to Immortalin, effectively keeping approval process. Alice and Leary decide to
it off the market, Baron went into hiding to begin a romantic relationship.
continue developing the drug. We also learn
that Nord Biotech attempted to acquire The Novel:FN3
Immortalin, but was outbid by Lawrence;
Nord Biotech wanted the drug in order to FN3. This summary of the Novel is
develop germ warfare. taken, with some changes, from
Defendants' brief, as I find
In the next scene, Gloria visits Lawrence's Defendants' summary to be accurate.
labs, to be injected with the stolen See Defendants' Memorandum In
Immortalin, which she mistakenly believes Support of Motion to Dismiss at 6-
is the new generation. However, she reacts 10.
badly to the injection (of an old derivative of
Immortalin), and develops horrible boils all The Novel's story is told through two
over her face. Gloria flies into a rage. Later, alternating perspectives: (1) a first person
Gloria, still in a disturbed state, visits account from the perspective of the
Melissa Baron at her apartment, demanding protagonist, Marcia “Carley” DeCarlo, a 32-
to know where Melissa's husband is keeping year old divorcee newspaper columnist; FN4
the new generation of Immortalin. A fight and (2) a third person account from the
ensues, and Gloria kills Melissa. As she perspective of Ned Cooper, an unbalanced
escapes from Melissa's apartment, Gloria man who snaps after his wife's accidental
encounters Zacharias, who has been looking death and embarks on a vengeful killing
spree. The Novel opens at a stockholders' explains that another company, Garner
meeting of Gen-stone, a company Pharmaceuticals, had invested heavily in
developing a promising cancer cure, held at Gen-stone; he also speculates that Nick had
the Grand Hyatt hotel in New York City. been looting Gen-stone for years.
Two weeks earlier, its president and the
inventor of the drug, Nick Spencer, was Carley again visits Lynn at the hospital,
reportedly killed when his private place where the two are startled by a strange man
crashed. Thereafter, rumors began (the crazed Ned, as we later learn), who
circulating that there had been serious excuses himself moments before the police
setbacks in the ongoing drug experiments arrive to question Lynn about the fire. The
and that Spencer had looted the company. police already have a suspect for the arson:
Carley, who is also the stepsister of Bikorsky, one of the shareholders who
Spencer's presumed widow Lynn, attends interrupted the meeting. Carley then visits
the meeting. Angry shareholders shout Dr. Broderick, an old Spencer family friend.
questions; one of them, Martin Bikorsky, Nick's father had been dedicated to finding a
claims that he will lose his house because he cancer cure; after he died, Nick gave
invested in the company in the hope of Broderick his father's research. Shortly
saving his cancer-stricken daughter. After before the plane crash, Nick asked
the meeting, someone sets fire to Lynn's Broderick to return his father's notes and
mansion. When she is hospitalized, Carley was upset to learn that a red-haired man
visits her. from Gen-stone had already taken them.

FN4. We learn that, some years Meanwhile, Ned's landlady, Mrs. Morgan,
before the commencement of the tells him he has to leave when his lease is
action in the Novel, Carley lost a up. Ned drives to the site of the dream house
baby to a heart defect. he and Annie once shared. He
unsuccessfully tries to rent a room from an
The story then shifts to Ned's perspective. old neighbor, Mrs. Shafley, and then runs
He is in the lobby of that same hospital into Harry Harnik, the owner of their old
where his wife Annie used to work. When house. Ned blames them all for Annie's
Annie learned that he had sold their dream death and decides to kill Lynn, Carley, Mrs.
house to invest in Gen-stone, she drove off Morgan, Mrs. Shafley, Mr. Harnik and
and was killed in an auto accident. Ned runs Harnik's wife, Bess.
into a doctor who prescribes something for
his hand (which we later learn was burned Carley asks the two researchers at Gen-
while setting fire to Lynn's mansion). stone, Dr. Celtavini and Dr. Kendall, about
the red-haired man. Celtavini denies
Carley is hired by a newspaper to do an in- knowledge of any such person and Carley
depth profile of Nick, which gives her the gives Dr. Celtavini Broderick's number so he
opportunity to investigate his disappearance. can investigate further. Carley then
She interviews the company's chairman, interviews Nick's secretary, Vivian Powers.
Charles Wallingford, and Dr. Celtavini, head
of its labs, at their offices. Wallingford Meanwhile, as Ned plots the murders, he has
stopped taking his medication, his burned
hand is infected, and he has started talking Ned goes to the pharmacy for something to
to his dead wife. treat his burned hand. When he thinks that
the cashier Peg suspects him of starting the
Carley meets with Bikorsky, his wife, Rhoda fire, he kills her.
and their cancer-stricken daughter Maggie.
Rhoda persuaded Bikorsky to invest in Gen- Carley learns that Vivian has disappeared.
stone after meeting Nick at a hospice. Carley News reports surface that Nick has been
is more convinced than ever that Bikorsky spotted in Switzerland. Both Carley and the
did not set the fire. She then learns that police suspect that Vivian is on her way
Broderick has been struck by a hit-and-run there to meet him.
driver. A news report announces that a piece
of Nick's clothing has been found near the After Ned gets a visit from two detectives
site of the plane crash. Seeking to comfort investigating Peg's murder, he buries his
Lynn, Carley finds her at her Manhattan rifle at Annie's grave. He realizes that he is
apartment with Wallingford, Gen-stone's the prime suspect in Peg's death and
president, and others including Adrian accelerates his plan to murder the others.
Garner, the owner of Garner
Pharmaceuticals, the company that had The police trace the threatening e-mails to
invested in Gen-stone. someone claiming to be Nick Spencer and
using the password “Annie”. When Vivian's
Carley receives some threatening e-mails, neighbor's car is missing, the police suspect
including one that reads “Who was the man that Vivian used the car to flee. Carley again
in Lynn Spencer's mansion a minute before visits Gen-stone and meets with Wallingford
it caught fire?” The suspicious and a Garner Pharmaceuticals lawyer,
circumstances of Broderick's hit-and-run Lowell Drexel.
accident persuade Nick's secretary, Vivian,
to reveal to Carley not only that Nick had Ned retrieves his rifle from Annie's grave
earlier tried to get his father's records (which and kills his landlady, Mrs. Morgan. He
Carley knew from Broderick), but that hears Annie's voice telling him next to kill
shortly before the plane crash, he nearly had his old neighbors.
an accident when his accelerator stuck.
Carley now suspects that Nick has been Carley learns that Vivian has been found
murdered. She meets with the caretakers of alive but unconscious in the neighbor's car.
the Spencer mansion who dislike Lynn (who
is Nick's second wife). They reveal that Nick Ned hides in one of the deserted buildings
had a romantic interest in Vivian. Now, on Lynn's mansion grounds, waiting to kill
instead of murder, Carley wonders whether Mrs. Shafley and the Harniks.
the plane crash was staged so that Vivian
and Nick can be together. She visits the After another meeting with Drexel, Carley
hospice where Nick volunteered and learns takes some Garner Pharmaceuticals
that he may have illegally given the drug to pamphlets. She agrees to meet with Lynn the
two patients, who quickly improved. next day.
and then forces Carley to drive him to
Meanwhile, Ned sees Lynn talking to the Annie's grave. En route, Carley realizes that
same man he had seen her with the night of Ned thinks he is talking to Annie, so she
the fire. Ned leaves, kills Mrs. Shafley and tells him that she would like to write a story
the Harniks, then returns. about how much Annie loved him. At the
cemetery, Ned threatens Annie, but then kills
Carley learns that Nick's former in-laws, himself.
who also invested in Gen-stone, took
custody of Nick's son Jack after Nick In the epilogue, we learn that Garner had
married Lynn; they are convinced that Nick masterminded the whole plot in order to
is dead, since he would never leave Jack. sabotage the experiments, force Gen-stone
into bankruptcy, and then acquire the patent
Ned hears that the three bodies of his old on the sure-to-be-lucrative drug. He was
neighbors have been found. The police having an affair with Lynn and gave her a
suspect Ned of shooting them, as well as pill to slip into Nick's drink at the airport.
Peg and his landlady. He has just two more When it took effect several hours later, it
people to kill-Lynn and Carley. knocked Nick unconscious, and he crashed
the plane. Garner is indicted for murder. At a
Carley also learns of the killings and memorial service for Nick, Bikorsky's wife
remembers seeing Ned at the hospital the reveals that Nick had given the vaccine to
day after the fire. Maggie, who is well on her way to being
cured.
At the mansion, Ned overhears a message
confirming a meeting between Lynn and (ii) Applicable Law
Carley the next day. He plans to kill them
both at that time. [5] “[T]he determination of the extent of
similarity which will constitute a substantial
On her way to the mansion, Carley stops at and hence infringing similarity presents one
the airport where Nick began his ill-fated of the most difficult questions in copyright
flight. She questions a waitress who law, and one which is the least susceptible of
overheard an argument between Nick and helpful generalizations.” Warner Bros., Inc.
Lynn before his flight left, leading Carley to v. American Broadcasting Cos., Inc., 654
theorize that Nick did not fake his F.2d 204, 208 (2d Cir.1981) (quoting the
disappearance, and that Vivian was leading text, Nimmer on Copyright ). The
kidnapped. As she skims the Garner Second Circuit cases confront this difficulty
Pharmaceuticals pamphlets, she sees an old by fashioning the “ordinary observer” test to
photo of the now-gray lawyer Drexel: he determine the extent of similarity between
had red hair. Carley arrives at the mansion, two works. In Judge Learned Hand's
confronts Lynn with her knowledge that formulation, there is substantial similarity
Drexel is the mysterious red-haired man and where “the ordinary observer, unless he set
that Lynn and Nick argued at the airport. out to detect the disparities, would be
Drexel enters holding a gun, but moments disposed to overlook them, and regard their
later Ned enters, shoots Drexel and Lynn, aesthetic appeal as the same.” Peter Pan
Fabrics, Inc. v. Martin Weiner Corp., 274 rather than credibility, which we are in as
F.2d 487, 489 (2d Cir.1960). More recently, good a position to decide as was the district
the Second Circuit has said that the ordinary court.” Hamil America, 193 F.3d at 97
observer test “queries whether an average (citations and internal quotation marks
lay observer would recognize the alleged omitted). See also Walker, 784 F.2d at 49
copy as having been appropriated from the (“Each of the panel members has read the
copyrighted work,” and went on to observe book and viewed the film”; district court's
that “[i]n comparing works for infringement conclusion that no reasonable observer
purposes, we examine the works' total could find substantial similarity between the
concept and feel.” Hamil America, Inc. v. protectible elements of plaintiff's book and
GFI, 193 F.3d 92, 100, 102 (2d Cir.1999) defendant's movie affirmed).
(citations and internal quotation marks
omitted). “It is only where the points of [7] While the Second Circuit's decision in
dissimilarity exceed those that are similar Walker sanctioned the determination of
and those similar are-when compared to the substantial similarity vel non as a matter of
original work-of small import quantitatively law on a motion for summary judgment,
or qualitatively that a finding of no there is ample authority for the proposition
infringement is appropriate.” Rogers v. that a district court may make that
Koons, 960 F.2d 301, 308 (2d Cir.1992). determination on a motion to dismiss for
failure to state a claim under Rule
[6] One might think that the question of 12(b)(6).See, e.g., Bell v. Blaze Magazine,
substantial similarity is so fact-intensive that No. 99 Civ. 12342, 2001 WL 262718
it must always be for a jury to decide. (S.D.N.Y. Mar.16, 2001), at *3; and Boyle v.
However, the Second Circuit has made it Stephens, Inc., No. 97 Civ. 1351, 1998 WL
plain that the question may be resolved by 80175 (S.D.N.Y. Feb. 25, 1998), at *4 (“If
courts as a matter of law. “[A] district court after examining the works themselves, this
may determine noninfringement as a matter Court determines that there is no substantial
of law on a motion for summary judgment similarity, then the plaintiff here can prove
either when the similarity concerns only no facts in support of his claim which would
noncopyrightable elements of plaintiff's entitle him to relief-the standard for
work, or when no reasonable trier of fact dismissal under Rule 12(b)(6).”) (citation
could find the works substantially similar.” omitted). Accord Nelson v. PRN
Walker, 784 F.2d at 48 (citation omitted). Productions, Inc., 873 F.2d 1141, 1143-1144
The Second Circuit makes the same legal (8th Cir.1989) (“The trial judge could
determination de novo on an appeal from a properly determine the matter of substantial
district court's similarity finding, the judges similarity as a matter of law and did so by
of that court having concluded that they can granting defendants' motion to dismiss the
see and read as well as district judges. “In copyright count on the ground that it failed
considering substantial similarity between to state a claim for infringing use.”). While
two items, we review the district court's there are some cautionary expressions
findings de novo-not on the clearly contra, see Great American Fun Corp. v.
erroneous standard-because what is required Hosung New York Trading Inc., 935 F.Supp.
is only a visual comparison of the works, 488 (S.D.N.Y.1996) (where “at least some of
the parties' marionettes bear a strong, if not Id.
striking similarity,” the question of
substantial similarity “should be reserved for After reviewing the two works at issue in
the trier of the fact-or at least the summary this case, it is clear that there are indeed
judgment stage”), the case at bar turns upon similarities between the Novel and the
the question of substantial similarity Screenplay. For example, both open at a
between two written works, and the requisite drug company meeting in the Grand Hyatt
comparison between them would not be hotel in Manhattan, which meeting is
enhanced in any manner by discovery interrupted by a disgruntled man
preceding a motion for summary complaining about the ineffectiveness of a
judgement.FN5 newly developed “miracle drug” with regard
to an ill family member. Both works have a
FN5. We may say with the poet: relatively young, divorced, ambitious female
“The Moving Finger writes; and, reporter as protagonist, and both involve a
having writ, / Moves on: nor all your conspiracy involving drug companies
Piety nor Wit / Shall lure it back to seeking to gain the patent on the miracle
cancel half a Line, / Nor all your drug in order to reap huge profits. In both
Tears wash out a Word of it.” works, the scientist developing the drug
Edward Fitzgerald, The Rubaiyat of goes missing, and is targeted as part of the
Omar Khayyam, stanza 71. conspiracy. Also, in each work, the wife of
the lead scientist is having an affair with the
[8] Finally, it is axiomatic that “a copyright head of one of the drug companies involved,
does not protect an idea, but only the and both wives are murdered. With regard to
expression of an idea.” Kregos v. Associated total concept and feel, see Hamil America,
Press, 3 F.3d 656, 662 (2d Cir.1993) 193 F.3d at 102, both the Novel and the
(citation omitted). “The distinction between Screenplay are fast-paced, action-packed,
an idea and its expression is an elusive one.” twist-filled thrillers that end positively, when
Williams v. Crichton, 84 F.3d 581, 587-88 the conspiracy is exposed, the miracle drug
(2d Cir.1996). In Nichols v. Universal is shown to work, and the protagonist begins
Pictures Corp., 45 F.2d 119, 121 (2d a new romantic relationship.
Cir.1930), Judge Learned Hand stated:
Upon any work, ... a great number of [9][10] However, in order to constitute
patterns of increasing generality will fit substantial similarity, these “similarities
equally well, as more and more of the shared by the works [must amount to]
incident is left out. The last may perhaps be something more than mere generalized idea
no more than the most general statement of or themes,”Warner Bros., 654 F.2d at 208. It
what the [work] is about, and at times might is the province of the court, not a jury, to
consist only of its title; but there is a point in determine as a matter of law whether certain
this series of abstractions where they are no material is copyrightable expression or non-
longer protected, since otherwise, the copyrightable idea. See CK Co. v. Burger
[author] could prevent the use of his ‘ideas,’ King Corp., 122 F.3d 1055 (Table), 1995
to which, apart from their expression, his WL 595526, at *2 (2d Cir.1995) (“Whether
property is never extended. material is protectible under 17 U.S.C. § 501
is an issue of law for the court, and does not infringer of liability, as “no copier may
implicate the average observer test for defend an act of plagiarism by pointing out
substantial similarity.”). While Defendants how much of the copy he has not
may argue that the similarities between the pirated,”Rogers, 960 F.2d at 308 (citation
works relate to generalities and not omitted).
protectible expressions of ideas, enough
specificity exists to satisfy the Court that In the case at bar, despite differences
Plaintiff has alleged infringement of between the Screenplay and the Novel,
copyrightable expressions of ideas. when the similarities are viewed through the
prism of Rule 12(b)(6) I am unable to
Even accepting the existence of sufficient conclude that “no reasonable trier of fact
allegations of infringement of copyrightable could find the works substantially similar.”
material, it does not necessarily follow that See Walker, 784 F.2d at 48. Accordingly,
Defendants cannot show lack of substantial Defendants' motion to dismiss is denied.
similarity as a matter of law, because, while
“[t]he ordinary observer test focuses on the 3. Attorneys' Fees and Costs
similarities and not the differences ..., this
Circuit has also recognized that numerous Defendants ask to be awarded attorneys' fees
differences tend to undercut substantial and costs. The Copyright Act allows a court
similarity.” Warner Bros., Inc. v. American to award reasonable attorneys' fees to the
Broadcasting Cos., Inc., 523 F.Supp. 611, prevailing party in an infringement action.
616 (internal quotation marks and citation See17 U.S.C. § 505. As I have decided,
omitted); see also Walker, 784 F.2d at 49 however, that Defendants' motion to dismiss
(substantial similarity lacking as a matter of should be denied, thereby declining to
law where “differences in plot and structure declare a winner at this stage in the
far outweigh [the] general likeness [between proceedings, an award of attorneys' fees and
the works]”). As can be seen from a costs is not appropriate at this time.
comparison of the above abridged versions
of the works, there are obvious differences B. The Motion for Sanctions Pursuant to
between the Novel and the Screenplay. Most Rule 11
significantly, the Novel tells its story
through two different, interrelated [11][12][13] “The central purpose of Rule
viewpoints, those of Carley in the first 11 is to deter baseless filings in district court
person and Ned in the third person, while and thus ... streamline the administration and
the Screenplay has a single third person procedure of the federal courts.” Cooter &
perspective. Additionally, the Screenplay has Gell v. Hartmarx Corp., 496 U.S. 384, 393,
no character really analogous to Ned, whose 110 S.Ct. 2447, 110 L.Ed.2d 359 (1990)
“story” comprises a significant part of the (citation omitted). Under Rule 11, a
Novel. Further, it bears noting that there is plaintiff's counsel must undertake reasonable
no terrorism subject matter in Defendants' inquiry to ensure that papers filed are “well-
work, as there is in Plaintiff's. Nonetheless, grounded in fact, legally tenable, and not
certain dissimilarities between the works interposed for any improper purpose,” or
will not serve to automatically relieve the risk sanctions. Id. (internal quotation marks
and citation omitted). Further, if counsel Plaintiff's infringement claim alleges enough
learns that a claim has become to survive a Rule 12(b)(6) motion to dismiss,
unsupportable after filing, sanctions may be it follows that that claim is not “baseless”
appropriate if that claim is not withdrawn. for Rule 11 purposes, thus no sanctions are
See Gambello v. Time Warner Commc'ns, warranted with regard to that asserted
Inc., 186 F.Supp.2d 209, 230 reason.
(E.D.N.Y.2002). When determining whether
a Rule 11 violation has occurred, the court [15] The second reason proposed by
should use an objective standard of Defendants, however, presents a closer
reasonableness. See MacDraw, Inc. v. CIT question. Although I understand how
Group Equip. Fin., Inc., 73 F.3d 1253, 1257- Plaintiff's counsel could have initially made
58 (2d Cir.1996) (citing Business Guides, the mistake in identifying the relevant
Inc. v. Chromatic Commc'ns Enters., Inc., version of Gal's work,FN6 it would have been
498 U.S. 533, 548, 111 S.Ct. 922, 112 entirely reasonable and advisable for
L.Ed.2d 1140 (1991)). Additionally, counsel Plaintiff's counsel, before filing suit, to
are entitled to rely on the objectively verify that the copyright registration number
reasonable representations of their clients, provided by Gal (and referenced in the
see Hadges v. Yonkers Racing Corp., 48 F.3d complaint) did, in fact, refer to the correct
1320, 1329-30 (2d Cir.1995), and all doubts version of Plaintiff's screenplay, particularly
must be resolved in favor of the signer of the in light of the fact that a proper copyright
pleading, see Rodick v. City of Schenectady, registration (or pending registration) is a
1 F.3d 1341, 1350 (2d Cir.1993) (citing prerequisite to filing a claim for
Associated Indem. Corp. v. Fairchild Indus., infringement, see Whimsicality, Inc. v.
961 F.2d 32, 34 (2d Cir.1992)). Rubie's Costume Co., Inc., 891 F.2d 452,
453 (2d Cir.1989). Nonetheless, in the first
[14] In Defendants' Memorandum of Law in instance, the mistake seems an honest one,
Support of Its Motion for Sanctions (“Def. and would not appear to be of the sort that
Rule 11 Mem.”), Defendants in effect claim would incline the Court to impose sanctions
that Plaintiff's counsel should be sanctioned pursuant to Rule 11 .
for one or both of the following reasons: (1)
Plaintiff's complaint is frivolous because it FN6. Plaintiff's counsel claim that
“claim[s] substantial similarity based they ascertained that Gal's original
exclusively on alleged similarities in ideas work was copyrighted, obtained the
and common stock elements”; and/or (2) original certificate of registration
Plaintiff's complaint is frivolous because it from the copyright office, and had
“expressly reference [s] the ‘wrong’ version no reason to suspect that the version
of [Plaintiff's] screenplay,” and Plaintiff's of the Screenplay presented to them
counsel did not correct the mistake even by Gal was not the work actually
when notified of the need to do so. Def. covered by the registration. See
Rule 11 Mem. at 1. Plaintiff's Memorandum of Law in
Opposition to Defendants' Motion to
Regarding the first reason stated above, as I Impose Rule 11 Sanctions (“Plaint.
have already concluded in this opinion that Rule 11 Mem.”) at 10, 13.
technical requirement of the “safe harbor”
However, I am troubled by Plaintiff's provision of Rule 11(c)(1)(A). That
counsel's failure to discover and correct the subsection provides that a motion for
error, and provide the correct version of the sanctions “shall not be filed with ... the court
screenplay to Defendants, even when unless, within 21 days after service of the
Defendants' counsel wrote a letter requesting motion ..., the challenged paper ... is not
withdrawal of the complaint and expressly withdrawn or appropriately corrected.”
highlighting the fact that certain of the Fed.R.Civ.P. 11(c)(1)(A). Plaintiff's counsel
similarities asserted by Plaintiff's counsel contend that they were served with the
simply did not exist in Plaintiff's own work. sanctions motion on May 6, 2005 (see
See February 23, 2005 Letter from Marcia Plaint. Rule 11 Mem. at 4), the very same
B. Paul to Richard F. Horowitz, attached as day that the motion was filed with the court
Ex. B to Paul Aff. While Plaintiff's counsel (seeDkt. No. 10). Plaintiff's counsel further
apparently may have thought that claim that they corrected the alleged
Defendants' counsel's warning letter was problem by filing the amended complaint,
“typical lawyer bluster”, see April 15, 2005 which referenced the correct version of Gal's
Letter from Marcia B. Paul to Richard F. screenplay, nine days later, on May 15,
Horowitz, attached to Reply Affidavit of 2005. See Plaint. Rule 11 Mem. at 4.
Marcia B. Paul at Ex. A, I cannot see how Therefore, Plaintiff's counsel posit, no
anyone who actually read the February 23 sanctions are warranted.
letter would not have been prompted to do
some investigation, which would have led to Defendants counter that, while conceding
the discovery of the error. Plaintiff's counsel that they did not technically comply with the
give no reasons for their failure to act. service requirements of the Rule
Although I do not necessarily attribute to 11(c)(1)(A), they complied with the spirit of
Plaintiff's counsel an ill will, counsel's lack the rule by mailing Plaintiff's counsel a
of care in the first instance, by failing to detailed letter stating that sanctions would
verify that the registration number cited in be sought if the complaint were not
the complaint referred to the correct version withdrawn. See Defendants' Reply
of the work, compounded by Plaintiff's Memorandum in Support of Its Motion for
counsel's blatant failure to investigate and Sanctions at 2-3. This letter, with the
correct the mistake, even when given clear heading “Rule 11 Safe Harbor Letter,” was
notice that such was necessary, directly sent 72 days before the sanctions motion
resulted in Defendants' counsel's was filed. See id.
expenditure of time and effort drafting a
motion to dismiss directed at the wrong Unfortunately for Defendants, however, the
work. plain language of the rule states explicitly
that service of the motion itself is required to
[16] However, even if I were to conclude begin the safe harbor clock-the rule says
that some sort of sanction is justified based nothing about the use of letters. “To stress
on the foregoing, Plaintiff's counsel argue the seriousness of a motion for sanctions and
that sanctions cannot be imposed because to define precisely the conduct claimed to
Defendants have failed to comply with the violate the rule, ... the ‘safe harbor’ period
begins to run only upon service of the Court for a status conference on Monday,
motion.” Fed.R.Civ.P. Advisory December 19, 2005 at 10:30 a.m. in
Committee's note (emphasis added); see Courtroom 17C, 500 Pearl Street.
Siegal v. Pro-Ex Sec., No. 02 Civ. 610, 2002
WL 1203851, at *3 (S.D.N.Y. June 3, 2002) It is SO ORDERED.
(citing the same Advisory Committee
language). It does not seem overly S.D.N.Y.,2005.
demanding to require counsel to comply Gal v. Viacom Intern., Inc.
with the clear directives of Rule 11 when 403 F.Supp.2d 294, 2006 Copr.L.Dec. P
seeking sanctions under that rule. See, e.g., 29,109
Lancaster v. Zufle, 170 F.R.D. 7
(S.D.N.Y.1996) (“[T]he plain language of END OF DOCUMENT
the Rule expressly requires the serving of a
formal motion, and with good reason, for by
serving such a motion a movant ... places its
adversary on notice that the matter may not
be viewed as simply part of the paper
skirmishing among adversaries that too
often characterizes litigation in this uncivil
age.”); but see Jeffreys v. Rossi, 275
F.Supp.2d 463, 480 n. 27 (S.D.N.Y.2003)
(defendants had “complied with Rule 11”
despite failing to serve the motion 21 days
prior to filing it with the court because
defendants had sent a detailed warning letter
giving plaintiff “sufficient notice of
defendants' intent to move for sanctions and
an opportunity to withdraw the offending
papers” 21 days before filing the sanctions
motion). Therefore, Defendants' motion for
sanctions is denied.

III. CONCLUSION

For the above-stated reasons, Defendants'


motion to dismiss pursuant to Rule 12(b)(6)
is hereby denied, as is Defendants' related
request for an award of attorneys' fees and
costs. Further, Defendants' motion for
sanctions pursuant to Rule 11 is hereby
denied.

Counsel are directed to appear before the